Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-3, 7-14, 21 and 26-33 are pending in this application.
Election/Restrictions
Applicant’s election without traverse of Group II in the reply filed on 02/03/2026 is acknowledged.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 21 and 26-27 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention:
a. Claim 1 and claims dependent thereon are rejected because the definition of R10 is not clear. Applicants define R10 as “a gabapentin residue” and “a pregabalin residue”, but it is unclear what the residue looks like or how it is connected the carbonyl C(O). What is covered by the “residue” and what is not? In order to overcome this rejection, it is recommended that applicants recite specific substituent for variable R10 as it was done in claim 7.
b. In claim 21, the phrase, “for use ....” is indefinite. Literally, it simply states an intention, which is a mental state, not a patentable limitation. Hence the claim is improperly dependent, as it does not further limit the claim on which it depends. That is how the claim has been examined. Alternatively, this may be intended as a method of use claim, in which case, the claim would be garbled, as it begins as a compound claim, and ends as a method claim. Moreover, as it does not contain any actual step, it would not be a proper process claim. Alternatively, applicants may have intended the compound “in the form in which it is used”, i.e. what is intended is a composition claim. That, however, would require a second ingredient (the carrier) to become a proper composition claim. The intended scope of the claim is thus unclear.
Allowable Subject Matter
Claims 7-8 are allowed.
Objection
6. Claim 3 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Information Disclosure Statement
7. Applicant’s Information Disclosure Statement, filed on 02/03/2026, 10/13/2025 and 02/19/2024 has been acknowledged. Please refer to Applicant’s copies of the 1449 submitted herewith.
In order to expedite prosecution after rejoinder, the examine recommends that applicants delete “including”, “such as” and “preventing” from the method claims.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kahsay Habte Ph.D. whose telephone number is (571)272-0667. The examiner can normally be reached on 8:30 - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kahsay Habte/
Primary Examiner, Art Unit 1624
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